What is a trademark dispute?

A dispute may arise during an application, after registration is published, after registration, or through actual use in the market. First identify the procedure, delivery date, and current status of the mark before deciding what to do.

  • A third party applies for or registers a mark close to your brand
  • You receive an opposition or invalidation filing
  • Another party seeks to revoke your registration
  • A registered mark has not been used for a long period
  • The way a registered mark is used creates legal risk
  • Use of another party's mark raises infringement concerns

Opposition

If a newly published registration appears legally ineligible for registration, an opposition may be considered within the statutory period.

In Taiwan, an opposition generally must be filed within three months after the registration publication date. This is a statutory deadline, so check the publication date, covered goods or services, and possible grounds promptly.

Invalidation

If a mark has been registered but conflicts with earlier rights, lacks distinctiveness, or involves another statutory ground for refusal, an interested party may consider an invalidation action based on the facts.

Opposition and invalidation differ in applicant eligibility, timing, and procedure. Similar names alone do not determine which route is available.

Revocation

Revocation addresses problems arising after an otherwise valid registration, such as non-use for the relevant period, prohibited alteration in use, the mark becoming generic, or use that may mislead the public.

In a non-use revocation matter, the owner will generally need evidence of genuine use during the relevant period. Packaging, transaction documents, advertising, website records, and dated materials are more useful when preserved in the ordinary course of business.

What should you do after receiving dispute documents?

Do not assume the outcome from the document title or the other party's allegations, and do not overlook the response deadline. Organise the matter in this order before deciding on a response.

  1. Confirm the type of document and applicable deadline
  2. Review the application or registration status
  3. Collect evidence of the brand's actual use
  4. Confirm the other party's rights and allegations
  5. Then assess a response, negotiation, opposition, invalidation, or another appropriate option

A dispute is not decided by name similarity alone

Assessment may also involve the marks' overall appearance, sound and meaning, relationships between the goods or services, actual use, and other case-specific factors. Different names can still create risk, while similarity does not mean a proceeding will automatically succeed.

The available rights, evidence, deadlines, and actual market circumstances differ from case to case. No outcome should be described as guaranteed.